Appeal No. 1997-1201
Application No. 08/200,616
subject matter is prima facie obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). Similarly, the examiner must address the explicit
limitations set forth in the claim to set forth the prima facie case of lack of novelty or
obviousness.
Appellants argue that each of the individual references does not teach or suggest
the invention set forth in claims 1, 8 and 15. (See brief at pages 4-5.) Appellants’
arguments to the individual references are not persuasive since the rejection is based on a
combination of references.
Appellants argue the “the claims-in-issue clearly require that the two images be
combined into one image, and providing a split-screen image does not combine two
images into one image.” (See brief at page 5.) We disagree with appellants. The
language of the independent claims requires only that the two images be combined into
one video display. The split screen of Spigarelli would have been a teaching of a single
video display.
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